ELLIS, District Judge.
This is an effort to disqualify an expert. It is occasioned by unusual circumstances: Both sides in a patent infringement suit, first plaintiff Wang Laboratories, Inc. ("Wang") and then the NEC defendants ("NEC"),
Most of the essential facts are uncontroverted. Instead, the parties' disputes focus
The scenario begins in November 1990 when Thomas Scott, counsel for Wang, telephoned John Balde, a computer consultant,
Following the November 14 telephone conversation, Scott sent Balde a letter bearing that date and enclosing various materials he had selected or created. Specifically, the letter enclosed the patents in issue, certain prior art publications, some materials pertinent to the infringement issue, and a lengthy, detailed memorandum Scott prepared concerning the patents' prosecution history. In this letter, Scott asked Balde to review the material "so that we can discuss how best to explain the advantages to a computer designer of using Wang's SIMM memory technology." Scott closed the letter by noting that he wanted to meet with Balde once the latter had reviewed the enclosed material.
The next day Scott sent another letter. This letter, unlike the earlier one, was prominently labeled "CONFIDENTIAL ATTORNEY — WORK PRODUCT." It contained an outline of the potential defenses to Wang's suit as Scott then viewed them. It also focused more sharply the topics on which Wang needed Balde's views. In closing, Scott wrote that "this outline will assist your review of the materials included in my November 14, 1990 letter." Scott avers that he subsequently had several conversations with Balde concerning the technical aspects of the case, conversations in which he claims to have disclosed confidential information and in which he contends he made clear to Balde that the conversations were confidential. Balde does not specifically deny that the further telephone calls took place. He claims, however, that he made no use of the November 15th letter. In his view, the letter was premature; it sought his opinions on specific litigation issues, yet Balde's position, in his own mind, was that he would not agree to be retained until he first determined that the patents were valid. Balde wrote no letter to Scott expressing this view.
In any event, Balde proceeded to investigate the patents in suit, ostensibly by his own means, including consultations with, as he put it, "a few qualified people." Then, on December 10, 1990, Balde called Scott to report his conclusion that the patents were invalid and that he, Balde, was therefore not interested in pursuing the matter as a consultant. Scott requested a report, which Balde sent two days later. Balde's cover letter for the report opened by noting that "[a]s you know, I [Balde] have read the patents and the Work-Product information on the two Wang SIMM patents...." He closed by thanking Scott for offering to pay his $1,540 invoice for time spent on the task and by noting that he hoped he might be "of more useful service to you for some other issues that might arise." The report itself is detailed and covers three-and-one-half single-spaced typed pages.
Sometime thereafter, NEC contacted and retained Balde. Neither Scott nor anyone on Wang's behalf was advised of this until April 1991, when NEC's counsel advised Wang's counsel that Balde would be called to testify at trial as an NEC expert on the patent validity issues. Wang's disqualification motion followed.
Circumstances similar to those at bar are not common. Not surprisingly, therefore, the parties have cited no controlling authority directly on point. See Paul v. Rawlings Sporting Goods Co., 123 F.R.D. 271, 277 (S.D.Ohio 1988) ("There appears to be little case law dealing with the issue of disqualification of expert witnesses"). Even so, existing analogous authority points persuasively to the conclusion that disqualification is required in the circumstances at bar.
Analysis properly begins with an acknowledgment of the inherent power of federal courts to disqualify experts in certain circumstances. This power exists in furtherance of the judicial duty to protect the integrity of the adversary process and to promote public confidence in the fairness and integrity of the legal process. See Paul, 123 F.R.D. at 277-78; Great Lakes Dredge & Dock Co. v. Harnischfeger Corp., 734 F.Supp. 334, 336 (N.D.Ill.1990).
While the existence of the disqualification power is clear, its exercise presents more difficult issues in certain circumstances. To be sure, no one would seriously contend that a court should permit a consultant to serve as one party's expert where it is undisputed that the consultant was previously retained as an expert by the adverse party in the same litigation and had received confidential information from the adverse party pursuant to the earlier retention. This is a clear case for disqualification. See Marvin Lumber & Cedar Co. v. Norton Co., 113 F.R.D. 588 (D.Minn. 1986); Miles v. Farrell, 549 F.Supp. 82 (N.D.Ill.1982). Less clear are those cases where, as here, the parties dispute whether the earlier retention and passage of confidential information occurred. In this event, courts should undertake a two-step inquiry:
See Paul, 123 F.R.D. at 278; Great Lakes Dredge & Dock Co., 734 F.Supp. at 337.
Affirmative answers to both inquiries compel disqualification. But disqualification is likely inappropriate if either inquiry yields a negative response. Thus, even if counsel reasonably assumed the existence of a confidential relationship, disqualification does not seem warranted where no privileged or confidential information passed. See Paul, 123 F.R.D. at 279 (expert not disqualified where there was a "lack of communication of any information of either particular significance or which can be readily identified as either attorney work product or within the scope of the attorney client privilege"); see also Nikkal Ind. Ltd. v. Salton, Inc., 689 F.Supp. 187, 190 (S.D.N.Y.1988). Were this not so, lawyers could then disable potentially troublesome experts merely by retaining them, without intending to use them as consultants. Lawyers using this ploy are not seeking expert help with their case; instead, they are attempting only to prevent opposing lawyers from obtaining an expert. This is not a legitimate use of experts, and courts should not countenance it by employing the disqualification sanction in aid of it.
Similarly, disqualification should not occur in the absence of a confidential relationship even though some confidential information may be disclosed. See Estate of George S. Halas, Sr. v. Commissioner, 94 T.C. 570, 577 (1990) (expert not disqualified where no previous confidential relationship existed between an appraiser and the taxpayer). In this event, the disclosure is essentially a waiver of any existing privilege.
Applied to the facts of this case, the two-step inquiry yields affirmative responses to both questions. It is indisputable that Scott disclosed confidential work product material to Balde. Scott's memorandum detailing and assessing the patent file wrapper history and his November 15 letter outlining potential defenses to Wang's suit are the clearest examples. While the value of the disclosures is debatable, their essential work-product nature is not. No experienced litigator would freely disclose these materials to opposing counsel. Beyond this, the totality of circumstances points convincingly to the conclusion that Scott was reasonable in assuming the existence of a confidential relationship with Balde. Thus, the November 14 and 15 letters, though neither is entirely free from ambiguity, are both plainly consistent with Scott's sworn assertion that he considered he had retained Balde and that a confidential relationship existed. The amount and nature of the materials included with the letters furnish additional support for this conclusion. The letters informed Balde of the case issues and identities of the parties involved. Significantly, the November 15 letter was prominently labeled as confidential. Balde's silence in the face of receiving this information reenforces the reasonableness of Scott's assumption that a confidential relationship existed. Under these circumstances, Scott was objectively reasonable in assuming that he had retained Mr. Balde and that a confidential relationship existed.
The result reached here is consistent with the authorities cited by the parties. Thus, courts have disqualified consultants where there was persuasive evidence that a lawyer was objectively reasonable in assuming the existence of a confidential relationship and that confidential information was disclosed.
Finally, it is worth noting that nothing in this opinion or the Court's ruling is intended to suggest that either party or the consultant acted inappropriately.
Experts, strictly speaking, are not advocates; they are sources of information and opinions in technical, scientific, medical or other fields of knowledge. Yet when experts are retained in connection with litigation, they must operate within the constraints of, and consistent with, the adversary process. This dispute was a reminder of this essential fact.
An appropriate Order has issued.